Copycat Caught – Fair dealing is no defence when 100% of work is copied
On March 8, 2016, Justice Manson held that PS Knight Co Ltd infringed copyright in the Canadian Standards Association’s 2015 CSA Code. This is the latest decision in an ongoing legal battle between Knight and the CSA. See our previous blog post here. The CSA is an organization that develops standards. The CSA claims copyright... Read More
Fears and Tears Insufficient to Warrant Interim Injunction
On March 24, 2016, Justice Russell dismissed TearLab’s motion for an interim injunction that sought to prevent I-Med Pharma Inc. from marketing its i-Pen System prior to the disposition of TearLab’s motion for an interlocutory injunction. Canadian Patent No. 2,494,540 relates to systems for measuring the osmolarity of fluid samples. TearLab markets a system for... Read More
Keep it Together: Federal Court Upholds Decision Refusing Bortezomib Bifurcation
On March 15, 2016, Justice Diner of the Federal Court released his Order and Reasons in Teva Canada Limited v. Janssen Inc., 2016 FC 318. The case involved the appeal of an order of Prothonotary Tabib, who had refused Janssen’s motion for bifurcation of both (i) Teva’s damages action pursuant to section 8 of the... Read More
Patent Listing Redux – Perfect Match Again Required
In Gilead Sciences, Inc. v. Canada (Health), Justice Heneghan of the Federal Court granted Apotex’s motion and concluded that Canadian Patent No. 2,261,619 was ineligible for listing on the Patent Register in respect of the combination drug product TRUVADA (emtricitabine/tenofovir disoproxil fumarate) pursuant to paragraph 4(2)(a) of the Unamended (pre-2015 amendments) Patented Medicines (Notice of... Read More
Absent de facto prejudice, pleading amendments will ‘almost always’ be in the interests of justice
On January 29, 2016, Justice Barnes of the Federal Court released the Order and Reasons in Canplas Industries Ltd. v. Airturn Products Inc., 2016 FC 109 where the Defendants moved to amend their Second Statement of Defence and Counterclaim to add a product made by Vent Air as prior art. The Vent Air product was... Read More
Real and Substantial – Connection to B.C. sufficient for Canadian Olympic Committee to maintain action against North Face
On February 16, 2016, Justice Dillon dismissed an application by VF Outdoor Inc. (“VF USA”) to dismiss or stay the action brought against it by the Canadian Olympic Committee on the grounds that the Court lacked territorial competence or that the Court should decline to exercise its jurisdiction. The VF Corporation owns various VF Group... Read More
LINGAYEN Trade-mark Cannot Be Preserved – Court of Appeal Clarifies Test for Marks Descriptive of Place of Origin
MC Imports Inc. appealed a decision of the Federal Court that invalidated its trade-mark for LINGAYEN in association with Filipino food products such as fish sauce, preserves, salted fish, and other related goods, as well as supplier and distributor services. The word “Lingayen” is the name of a municipality in the Philippines. The Federal Court,... Read More
Failure to Disclose Public Servant Status Will Not Void a Patent
On February 5, 2016 Justice Boivin (writing on behalf of the Court of Appeal) released the reasons for judgment in Brown v. Canada, 2016 FCA 37. The case was an appeal from a decision of the Federal Court regarding a motion for summary judgment by the Crown in a patent invalidity claim pursuant to s.... Read More
SUPERSHUTTLE Trade-mark Stops Here – Registered Services Must be Performed in Canada
In July 2014, the Trade-marks Opposition Board concluded that Supershuttle International Inc. had not used its registered trade-mark SUPERSHUTTLE in Canada. The mark was registered in association with “airport passenger ground transportation services.” The TMOB noted that while the evidentiary threshold for showing use is low, there must be sufficient facts demonstrating use in Canada. Supershuttle... Read More
Federal Court allows application to correct ownership after inadvertent error in assignment of patent rights
On January 19, 2016 Justice Shore granted an application under section 52 of the Patent Act to vary all entries in the Patent Office related to the ownership of Canadian Patent No. 2,406,340 by recording Gray Manufacturing Company, Inc. as the owner. Gray Automotive Products Co. employed the named inventor of the 340 Patent, William... Read More
Federal Court reaffirms disclosure requirement for sound prediction
In Eli Lilly Canada Inc v. The Minister of Health et al, 2016 FC 47, Justice Barnes dismissed Eli Lilly’s prohibition application in respect of Hospira’s generic version of pemetrexed. Canadian Patent No. 1,340,794 is directed to novel pyrrolopyrimidine derivatives which are useful as antitumor agents, the production and utilization thereof. The inventive concept of... Read More
Large security for costs upheld in Alberta multi-defendant copyright action
In Geophysical Service Incorporated v Encana Corporation, Justice Strekaf of the Court of Queen’s Bench of Alberta heard an appeal by GSI relating to 26 orders for security for costs granted to various defendants. GSI had been ordered by Master Laycock to pay a combined amount of over $1.9 million as security for costs (see... Read More
Federal Court of Appeal upholds prohibition application dismissal under s. 6(5)(b) of the NOC Regulations
Bayer Inc. et al., v. Fresenius Kabi Canada Ltd., 2016 FCA 13 Bayer appealed the dismissal of its application for a prohibition order against Fresenius in respect of the drug moxifloxacin hydrochloride. Prothonotary Lafrenière dismissed the application under s. 6(5)(b) of the Patented Medicines (Notice of Compliance) Regulations on the basis that Fresenius’ product monograph... Read More
Condiment Trade-mark Rejected by the Federal Court
On January 7, 2016, Justice LeBlanc of the Federal Court released the amended judgment and reasons in Kabushiki Kaisha Mitsukan Group Honsha v. Sakura-Nakaya Alimentos Ltda., 2016 FC 20. The case involved the appeal of two decisions of the Registrar of Trade-marks (Trade-marks Opposition Board) rejecting Kabushiki’s opposition to the registration of the word mark... Read More
Un-Metatag Me! Copying metags found non-infringing by FCA
In Red Label Vacations Inc. v. 411 Travel Buys Ltd., 2015 FCA 290, the Federal Court of Appeal upheld a decision of Justice Manson dismissing claims made by Red Label under the Copyright Act, RSC 1985 c. C-42 and Trade-marks Act, RSC 1985 c. T-13. Red Label and 411 Travel provide travel services to Canadians,... Read More
Claims under the Trade-marks and Competition Acts insufficient basis to stay Ontario defamation action
On December 22 2015, Justice Perell dismissed a motion to temporarily stay a defamation action in the Ontario Superior Court of Justice until completion of an action in the Federal Court involving the same parties and similar issues (2015 ONSC 7980). Canadian Standards Association sued Gordon Knight and his corporation in the Federal Court for... Read More
Perks are for everyone: PERKOPOLIS mark found non-infringing
In Venngo Inc. v. Concierge Connection Inc. et al., 2015 FC 1338, Justice Manson dismissed Venngo’s claim that Concierge and its directors infringed Venngo’s marks ending with the word “PERKS”, by using the trade-mark PERKOPOLIS. He also dismissed the claims that the defendants made false and misleading statements discrediting Venngo’s business, committed the tort of... Read More
Appeal dismissed from motion to compel answers from examination for discovery
In Hospira Healthcare Corporation v. The Kennedy Institute of Rheumatology, Madam Justice Kane dismissed Hospira’s appeal from Prothonotary Milczynski’s Order arising from a motion by Hospira to compel Kennedy to answers 354 questions that were taken under advisement or refused at the examination for discovery of Kennedy’s representative. The underlying dispute is a patent infringement... Read More
Dismissal of Application for “SECRET” Trade-mark upheld by the Federal Court
On December 1, 2015, Justice Gascon of the Federal Court released the judgment and reasons in Eclectic Edge Inc. v. Gildan Apparel (Canada) LP 2015 FC 1332. The case was an appeal of the decision of the Registrar of Trade-marks, refusing Eclectic’s application to register four trade-marks containing the words “valentine” and “secret” in association... Read More
Federal Court of Appeal refuses Appeal of Motion to Strike Decision due to “Uncertainty” in the Case Law
On December 8, 2015, Justice Stratas of the Federal Court of Appeal released his Reasons for Judgment of the Court in Teva Canada Limited v. Pfizer Canada Inc., 2015 FCA 280. The case was an appeal from the Federal Court (Justice Strickland) who dismissed an appeal from the Order of Prothonotary Aronovitch who dismissed Teva... Read More
A Confluence of Two Streams – Subsequent Amalgamation Cannot Change Contracting Parties’ Intention
In April 2009, Pfizer and ratiopharm settled a prohibition application under the PM(NOC) Regulations in respect of the drug product ratio-sildenafil. Subsequent to the agreement, Teva Canada Limited amalgamated with Ratiopharm and remained Teva Canada Limited. In 2012, Teva successfully defended a prohibition application commenced against it in respect of Novo-Sildenafil. Teva then brought a... Read More
Unauthorized changes to translation breaches contract but not moral rights
On November 17, 2015 Justice Hamilton of the Superior Court of Quebec released his judgment in Desgagné v. Group Ville-Marie Litterature Inc., 2015 QCCS 5448 a copyright/breach of contract dispute involving the unauthorized modification of a translated book prepared by Bernard Desgagné. Desgagné had entered into a contract with a publisher to prepare a translation... Read More
25 Year Old Action Dismissed for Inordinate Delay
On November 9, 2015, Justice Penny of the Ontario Superior Court of Justice granted a motion under Rule 24.01(c) of the Rules of Civil Procedure for an order dismissing an action for delay (2015 ONSC 6825). The underlying action was commenced in 1987 by Planon Systems Inc., and Douglas Verkaik against multiple defendants, including Michel... Read More
Court dismisses first biologic prohibition application
Amgen brought this prohibition application to prevent the issuance of a Notice of Compliance to Apotex for its proposed filgrastim product. The order would last until the July 31, 2024 expiry of Amgen’s Canadian Patent No. 1,341,537, entitled “Production of Pluripotent Granulocyte Colony-Stimulating Factor” and which is listed on the Patent Register against Amgen’s filgrastim product, NEUPOGEN. Prior... Read More
Going Down Swinging: Idenix’s Counterclaim for Infringement and Invalidity Dismissed as Own Patent Held Invalid
On November 2, 2015 Justice Annis released a 326-page decision holding that Canadian Patent No. 2,490,191 invalid (2015 FC 1156; see our blog post here). Gilead sells the antiviral drug sofosbuvir in Canada under the brand name Sovaldi, for use in combatting Hepatitis C virus (HCV). Gilead commenced an action to impeach 191 Patent because... Read More